Defending Dependent Claims Without Rule 30 RoP: The Court of Appeal in Fujifilm v. Kodak
The Court of Appeal has resolved four parallel appeals in the Fujifilm v. Kodak dispute, clarifying that patentees do not need a formal Rule 30 RoP amendment application to defend granted dependent claims.
The procedural burden on patentees defending their granted claims against a full-patent revocation attack has been a point of friction in early Unified Patent Court practice. The Court of Appeal has now resolved this tension across four parallel decisions (UPC-CoA-873/2025, UPC-CoA-881/2025, UPC-CoA-473/2025, and UPC-CoA-474/2025) in the Fujifilm v. Kodak dispute. By reversing the Mannheim Local Division on a critical procedural threshold, the panel clarified the boundary between a mere defence of granted claims and a formal amendment.
When does defending dependent claims require an application to amend under Rule 30 RoP?
At first instance, the Mannheim Local Division held that if a patentee wished to defend dependent claims separately after the independent claim was attacked, such a defence was inadmissible unless the patentee filed a proper application to amend the patent pursuant to Rule 30 RoP.
The Court of Appeal firmly rejected this approach. The panel explained that an application to amend the patent is only required if the patentee wishes to maintain the patent with amended wording deviating from the claims as granted, or if the patentee proposes combinations of dependent claims not explicitly included therein. This is not the case where a patentee merely defends the dependent claims or combinations already encompassed by the granted claim structure. Because the dependent claim incorporates the exact language of the independent claim while adding further features, its wording is not altered even if the independent claim falls. Consequently, the formal requirements of Rule 30 RoP do not apply to the defence of granted dependent claims.
How must a patentee substantiate combinations of dependent claims under Rule 29A(c) RoP?
While freeing patentees from the strictures of Rule 30 RoP, the Court of Appeal emphasized that defending dependent claims is not automatic. Under Rule 29A(c) RoP, a patentee requesting the rejection of a revocation action must identify in a sufficiently substantiated manner which dependent claims it considers valid should the independent claim be held invalid.
The panel set a clear standard for combinations. If the patentee wishes to rely on a combination of dependent claims that does not directly and specifically follow from their wording, the patentee must clearly indicate which combinations it considers valid. Crucially, the Court held that the principles of due process dictate that the number of such combinations must be reasonable in number, considering the circumstances of the case. In this dispute over a lithographic printing plate precursor, Fujifilm had explicitly defended combinations of features relating to steepness a45 and specific surface area ΔS in its pleadings, which the Court found sufficiently substantiated and limited in number.
Why did the Court of Appeal reject hindsight in the inventive step motivation analysis?
Beyond procedure, the decisions provide strict guidance on the assessment of inventive step. The patent sought to solve the technical problem of providing a lithographic printing plate precursor that enables excellent image visibility and a long press life. Kodak argued that the claimed lightness L* feature was obvious by combining starting documents with other prior art.
The Court of Appeal dismissed this attack by enforcing a strict rule against hindsight. The panel held that if there is no pointer to combine a reasonable starting point with another document, a motivation to take the next step in the direction of the invention cannot be derived from the content of such a combination document itself. Failing a motivation for the skilled person to consult a document, they will not become aware of its content, and it cannot be concluded that they would implement the missing feature disclosed therein.
When are website publication orders and monetary penalties justified under the Unified Patent Court Agreement?
The decisions also establish important boundaries on remedies. Fujifilm had requested an order to place a statement about the infringement on Kodak's website, alongside penalties for non-compliance with monetary obligations.
The Court of Appeal ruled that it is not appropriate and proportionate to impose a penalty in case of non-fulfilment of an enforceable monetary obligation. Regarding the website publication, the panel clarified the threshold for Article 80 UPCA. A publication of an own declaration by the infringer on its webpage is justified only in the event of special circumstances which call for such a publication as a corrective measure due to ramifications of an infringement which cannot be undone or sufficiently compensated otherwise.
What must practitioners change when defending granted claims after these parallel decisions?
Litigators defending patents at the Unified Patent Court must adjust their procedural strategy. Patentees no longer need to file conditional auxiliary requests under Rule 30 RoP simply to fall back on their granted dependent claims. However, this procedural freedom comes with a strict pleading burden. When drafting the Defence to the Counterclaim for revocation, practitioners must explicitly map out and substantiate the specific dependent claims and combinations they intend to defend. They cannot rely on the Court to sift through the claim tree of its own motion. Furthermore, the combinations selected must be kept to a reasonable number to respect due process. For parties seeking revocation, the strategy must account for the fact that a patentee can validly retreat to dependent combinations without triggering the formal amendment procedure, provided the defence is properly substantiated in the written pleadings.
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